Ex Parte Svendenius et al - Page 5

              Appeal 2007-1454                                                                                         
              Application 11/088,528                                                                                   

         1    mandatory and that what is relevant to an enablement determination depends upon                          
         2    the facts of the particular case).                                                                       
         3           Furthermore, “[w]hether undue experimentation is needed is not a single,                          
         4    simple factual determination, but rather is a conclusion reached by weighing many                        
         5    factual considerations.  Wands, 858 F.2d at 737, 8 USPQ2d at 1404.                                       
         6           The prior art may anticipate a claimed invention, and thereby render it                           
         7    non-novel, either expressly or inherently.  In re Cruciferous Sprout Litig., 301 F.3d                    
         8    1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied, 538 U.S. 907                            
         9    (2003).  Express anticipation occurs when the prior art expressly discloses each                         
        10    limitation (i.e., each element) of a claim. Id.  In addition, “[i]t is well settled that a               
        11    prior art reference may anticipate when the claim limitations not expressly found in                     
        12    that reference are nonetheless inherent in it.”  Id.                                                     
        13           35 U.S.C.  103 forbids issuance of a patent when “the differences between                        
        14    the subject matter sought to be patented and the prior art are such that the subject                     
        15    matter as a whole would have been obvious at the time the invention was made to a                        
        16    person having ordinary skill in the art to which said subject matter pertains.”                          
        17           In Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), the Court                           
        18    set out a framework for applying the statutory language of 103, language itself                         
        19    based on the logic of the earlier decision in Hotchkiss v. Greenwood, 52 U.S. 248                        
        20    (1851), and its progeny.  See 383 U.S. at 15-17, 148 USPQ at 465-67.  The                                
        21    analysis is objective:                                                                                   
        22           Under  103, the scope and content of the prior art are to be determined;                         
        23           differences between the prior art and the claims at issue are to be                               
        24           ascertained; and the level of ordinary skill in the pertinent art resolved.                       
        25           Against this background, the obviousness or nonobviousness of the subject                         
        26           matter is determined. Such secondary considerations as commercial success,                        
        27           long felt but unsolved needs, failure of others, etc., might be utilized to give                  


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